OPPOSITION No B 3 061 538

Cromogenia Units, S.A., Polígono Industrial Zona Franca, Sector E. Calle 40, nº 14-16, 08040 Barcelona, Spain (opponent), represented by P & T Intellectual Property, S.L., Sant Elíes 21, 3º 1ª, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Hikari Capital Limited, Tower D, Level 10, Penthouse 2, Plaza Mont Kiara, 2 Jalan Kiara, 50480 Kuala Lumpur, Malaysia (applicant), represented by Fry Heath & Spence LLP, Unit A, Faraday Court, Faraday Road, RH10 9PU Crawley, United Kingdom (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 538 is rejected as inadmissible.

2. The opposition fee will not be refunded.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 875 805 for word mark 'UNIGEL', namely against all the goods in Class 17. The opposition is based on Spanish trade mark registration No 3 711 961 for the word mark 'UNIGEL'. The opponent invoked Article 8(1)(b) EUTMR.

ADMISSIBILITY

According to Article 2(2)(b) EUTMDR, the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is an EUTM.

According to Article 5(3) EUTMDR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Article 2(2)(b) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

Furthermore, according to Article 46 EUTMR, the opposition period refers to the period of three months that starts from the date of the publication of the contested EUTM application.

Article 8(1)(b) EUTMR enables proprietors of earlier rights to oppose European Union trade mark applications if, inter alia, an earlier trade mark, within the meaning of Article 8(2) EUTMR, is identical or similar to the contested EUTM application and covers identical or similar goods and services.

According to Article 8(2) EUTMR, for the purposes of paragraph 1 of the same Article, ‘earlier trade marks’ means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) EU trade marks;

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

(iii) trade marks registered under international arrangements which have effect in a Member State;

(iv) trade marks registered under international arrangements which have effect in the Union.

On 09/08/2018, the opponent filed a notice of opposition against the contested application. The opposition is based on the Spanish trade mark registration No  3 711 961 for the word mark 'UNIGEL'. It is to be noted that the Spanish trade mark was filed on 21/03/2018 whereas the contested trade mark application was filed on 16/03/2018. No priorities were claimed. Therefore, the mark on which the opposition is based is not actually an earlier right within the meaning of Article 8(2) EUTMR and must be rejected as inadmissible.

Please note that the opposition fee will not be refunded. In accordance with Article 6(5) EUTMDR (former Rule 18(5) EUTMIR, in force before 01/10/2017), the Office only refunds the opposition fee in the event of a withdrawal and/or restriction of the trade mark during the cooling-off period.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Alina FRUNZA

Maria José LÓPEZ BASSETS

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.